EFF to Patent Office: Don't Make it Harder to Kill Bad Patents

It’s already much too difficult to invalidate bad patents—the kind that never should have been issued in the first place. Now, unfortunately, the Patent Office has proposed regulation changes that will make it even harder. That’s the wrong path to take. This week, EFF submitted comments [PDF] opposing the Patent Office’s proposal.

Congress created some new kinds of Patent Office proceedings as part of the America Invents Act (AIA) of 2011. That was done with the goal of improving patent quality by giving third parties the opportunity to challenge patents at the Patent Trial and Appeal Board, or PTAB. EFF used one of these proceedings, known as inter partes review, to successfully challenge a patent that had been used to sue podcasters.

Congress didn’t explicitly say how these judges should interpret patent claims in AIA proceedings. But the Patent Office, until recently, read the statute as EFF still does: it requires the office to interpret patent claims in PTAB challenges the same way it does in all other proceedings. That approach requires giving the words of a patent claim their broadest reasonable interpretation (BRI). That’s different than the approach used in federal courts, which apply a standard that can produce a claim of narrower scope.

Using the BRI approach in AIA proceedings makes sense. Critically, it ensures the Patent Office reviews a wide pool of prior art (publications and products that pre-date the patent application). If the patent owner thinks this pool is too broad, it can amend claims to narrow their scope and avoid invalidating prior art. Requiring patent owners to amend their claims to avoid invalidating prior art encourages innovation and deters baseless litigation by giving the public clearer notice about what the patent does and does not claim.

But you don’t have to take our word for it. Barely two years ago, the Patent Office made the same argument to the Supreme Court to justify the agency’s use of the BRI approach in AIA proceedings. The Supreme Court agreed. In Cuozzo v. Lee [PDF], the court upheld the agency’s approach based on the text and structure of the AIA, a century of agency practice, and considerations of fairness and efficiency.

After successfully convincing the Supreme Court that the BRI standard should apply in AIA proceedings, why has the PTO changed its mind? Unfortunately, the Patent Office’s notice says little to explain its sudden change of course. Nor does it offer any reasons why this change would improve patent quality, or the efficiency of patent litigation. Apparently, the Patent Office assumes minimizing differences between two deliberately different types of proceedings will be more efficient. That assumption is flawed. The PTAB’s interpretation of claim language will only be relevant to a district court if similar terms are in dispute. If not, the change will only ensure more lawsuits, based on bad patents, clog up the courts.

The timing of the Patent Office’s proposal may hint at its impetus. When the agency adopted and argued for the BRI standard, the Director was Michelle Lee. On February 8, 2018, Andrei Iancu became Director. Three months later, on May 9, the Patent Office proposed abandoning the BRI standard. In his keynote speech, Director Iancu referenced unfounded criticisms of AIA proceedings, from “some” who, “pointing to the high invalidation rates . . . hate the new system with vigor, arguing that it’s an unfair process that tilts too much in favor of the petitioner.” The Patent Office’s sudden change of view on this topic may be a capitulation to these unfounded criticisms and a sign of further policy changes to come.

We hope the Patent Office will reconsider its proposal, after considering our comments, as well as those submitted by the R Street Institute and CCIA, a technology trade group. Administrative judges must remain empowered to weed out those patents that should never have issued in the first place.

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